One of the most frequent criticisms of Nautilius v. Biosig is that it simply provides a general standard (Section 112 ¶2 requires that “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty” ) and fails to offer any substantive discussion of what this meant. In this post-Nautilius opinion affirming the district court’s ruling of indefiniteness, Judge Chen provides some of that guidance when it comes to words of degree.

Background. Interval owns the two patents-in-suit, Nos. 6,034,652 and 6,788,314, that claim priority back to 1996. These patents are directed to a system that “acquires data from a content provider, schedules the display of the content data, generates images from the content data, and then displays the images on a device.” The system does not simply initiate images on the display device, however. Rather, almost all of the asserted claims state that the images are displayed “in an unobtrusive manner that does not distract a user.” The idea is that the images will occupy the peripheral attention of a person in the vicinity of the display device while not interfering with their primary interaction with the device. The main issue on appeal was whether this “unobtrusive manner” language was indefinite.

Representative claim 1 of the ‘314 patent (with emphasis added):

1. A method for engaging the peripheral attention of a person in the vicinity of a display device, comprising the steps of:

providing one or more sets of content data to a content display system associated with the display device and located entirely in the same physical location as the display device;

providing to the content display system a set of instructions for enabling the content display system to selectively display, in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus, an image or images generated from a set of content data; and

auditing the display of sets of content data by the content display system;

wherein the one or more sets of content data are selected from a plurality of sets of content data, each set being provided by an associated content provider, wherein each associated content provider is located in a different physical location than at least one other content provider and each content provider provides its content data to the content display system independently of each other content provider and without the content data being aggregated at a common physical location remote from the content display system prior to being provided to the content display system, and wherein for each set the respective content provider may provide scheduling instructions tailored to the set of content data to control at least one of the duration, sequencing, and timing of the display of said image or images generated from the set of content data.

Interval sued AOL, Apple, Google, and Yahoo for infringement. In its claim construction order, the district court held the “in an unobtrusive manner” language indefinite under the pre-Nautilius standard, thus rendering invalid most of the asserted claims. (The parties stipulated to noninfringement of the remaining claims based on the court’s claim construction). Interval appealed.

Indefiniteness. Under Nautilus, “[a] claim fails to satisfy [the Section 112, 2] requirement and is thus invalid for indefiniteness if its language, when read in light of the specification and the prosecution history, ‘fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.'” Slip Op. at 10, quoting Nautilus. However, there is more to the inquiry than just this general statement. Here, the term at issue was a term of degree. That, by itself, was not fatal:

We do not understand the Supreme Court to have implied in Nautilus, and we do not hold today, that terms of degree are inherently indefinite. Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention….As the Supreme Court recognized in Nautilus, “absolute precision” in claim language is ‘unattainable.'”

Slip Op. at 11 (internal citations omitted). But meaningful boundaries – which Judge Chen indicates must be objective – are necessary; that one might identify some standard for measuring claim scope does not mean the claims meet the § 112 requirement:

Although absolute or mathematical precision is not required, it is not enough, as some of the language in our prior cases may have suggested, to identify “some standard for measuring the scope of the phrase….The Supreme Court explained that a patent does not satisfy the definiteness requirement of § 112 merely because “a court can ascribe some meaning to a patent’s claims.” Nautilus, 134 S. Ct. at 2130. The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.

Id. at 12 (internal citations omitted). Here, no such no such “objective boundaries” for those of skill in the art are provided in the patent:

The patents’ “unobtrusive manner” phrase is highly subjective and, on its face, provides little guidance to one of skill in the art….Although the patented invention is a system that displays content, the claim language offers no objective indication of the manner in which content images are to be displayed to the user. As the district court observed, “whether something distracts a user from his primary interaction depends on the preferences of the particular user and the circumstances under which any single user interacts with the display.”

The lack of objective boundaries in the claim language is particularly troubling in light of the patents’ command to read “the term ‘image’ . . . broadly to mean any sensory stimulus that is produced from the set of content data,” including sounds and video. ’652 patent, 6:60–64. The patents contemplate a variety of stimuli that could impact different users in different ways. As we have explained, a term of degree fails to provide sufficient notice of its scope if it depends “on the unpredictable vagaries of any one person’s opinion.”

Id. at 13. Nor did the written description provide the necessary guidance. “Where, as here, we are faced with a “purely subjective” claim phrase, we must look to the written description for guidance.” Id. But Interval’s principal argument, that “unobtrusive manner” is defined through its relationship to the “wallpaper” embodiment, thus informing those of skill in the art that “unobtrusive” has only a spatial meaning in the context of the patents, failed because the link was not clear: other portions of the specification suggest that the phrase may also be tied to the “screen saver” embodiment. The specification is “at best muddled, leaving one unsure of whether the “unobtrusive manner” phrase has temporal dimensions as well as spatial dimensions.” And it’s secondary argument, that the court must adopt a “narrow example” from the specification, failed because the “narrow example” from the specification was just that: an example, not a definition. The patent drafter used the term “e.g.” (“exempli gratia”), which in English usage means “for example.” If the drafter had instead used words of definition, such as “i.e.” (“id est” which in English usage means “that is”), it might have helped provide the necessary clarity. Nor was one example sufficient here: “With this lone example, a skilled artisan is still left to wonder what other forms of display are unobtrusive and non-distracting. What if a displayed image takes up 20% of the screen space occupied by the primary application with which the user is interacting? Is the image unobtrusive? The specification offers no indication, thus leaving the skilled artisan to consult the “unpredictable vagaries of any one person’s opinion.” Slip Op. at 18 (quoting Datamize).

Claim Construction/Noninfringement. The Federal Circuit revised the claim construction of two terms in the four claims of the ‘652 patent that did not contain the “unobtrusive manner” language, vacated the district court’s judgment of noninfringement as to these claims, and remanded for further proceedings.

Nonobviousness: Not at issue here. Are these patents obvious? That’s a different question. After the suit commenced, two of the defendants initiated an ex parte reexamination against the ‘652 patent and a third initiated an inter partes reexamination against the ‘314 patent. While the examiners found the asserted claims of the patents to be patentable over the cited prior art,the PTAB reversed the decision on the ‘314 patent during the appeal in this case and held that all the claims of that patent were obvious, anticipated, or both. The Federal Circuit opinion notes that Interval indicated that it will appeal that decision.

Not sure why in the world it could possibly matter given that the claim is invalid under multiple other prongs of the statute and should never have issued in the first place but…

It’s a method for

engaging the peripheral attention of a person

and, I’m happy to be mistaken about this, but all the other limitations in the claim are in the prior art except possibly for this “functionality”: in an unobtrusive manner that does not distract which is both devoid of any technical contribution to the prior art and also recites the ancient abstract process of, um, not distracting somebody.

That’s one way of approaching the problem.

It’s frankly unbelievable that any substantial amount of any court’s time, much less an appellate court, could be wasted on a claim like this one.

But meaningful boundaries – which Judge Chen indicates must be objective – are necessary; that one might identify some standard for measuring claim scope does not mean the claims meet the § 112 requirement:

I think it will ultimately come to rest as a two part test, and this first part is correct – is there some objective line one could view. The second part of the test is whether that objective line in fact has anything to do with what is purportedly being argued.

In other words – if my invention is (relating it to property law) a building on the corner of a city block. The first part of the test would require an objective measurement: The claim is directed to “part of a city block” for example. Then the second part of the test asks if there is a better definition that was expressable: In this second step the phrase “part of”, while being true and being nominally tied to the objective signpost, would fail because there is an easily available and more descriptive statement of my building, and thus simply defining it as “part of” would not be reasonable.

In other words, you’re going to see 112 2nd work in concert with 112 1st and 101 – The patentee will be forced to state whether their claim is to a particular machine or a class of machines (usually defined by their function). In the latter case, you’re going to get a lot of 101 knockouts. In the former case, you’ll get 112 2nd knockouts if the claim language is broad, vague or missing limitations.

In any case the final rule must be that if a significantly better description was available for the scope that applicant argues for in claim construction, then 112 2nd will operate to invalidate the claim (i.e. it will not be a reasonably certain scope), because the intent of the rule is to prohibit intentional vagueries in claim language and apprise the public of what the scope of the claim is.

To return to Nautilus itself – the applicant knew of what (distance) numbers he was positing that would enable the invention. The applicant similarly knew that other numbers would render the claim unusable for the purpose of his invention. An attempt to “sweep up” all possible numbers by using functional language is therefore not a reasonably certain scope.

“In any case the final rule must be that if a significantly better description was available for the scope that applicant argues for in claim construction, then 112 2nd will operate to invalidate the claim (i.e. it will not be a reasonably certain scope), because the intent of the rule is to prohibit intentional vagueries in claim language and apprise the public of what the scope of the claim is.”

I will hear you out as to why the “final rule” “must be” what you say. Though I should start off by saying that I strongly disagree. The existence of a better description does not at all indicate that the claim as written does not provide a reasonably certain scope. Not to mention that the USSC near certainly just gave us the “final rule” and by all appearances warned us beyond going any further. There is a reason that they said “reasonably” certain instead of just “certain”.

What you’re saying appears blatantly on its face to be just a variant on trying to reach “absolute precision”. In fact, it seems you may as well just come out and use those terms explicitly in explaining your position.

I did not spend quite some time advocating for a standard right around the one currently in place just so that people would be policed for attaining the maximum amount of clarity the office subjectively feels like is attainable. Especially when the office cannot itself enunciate what it is desiring the explicit language to be. Though with that said, the office is surely capable of helping the applicants out when it appears they’re trying to say one thing but have accidentally written another.

Hard to say if that is a fair characterization of this claim drafting or not in the eyes of the [be]holder, unless you know how much settlement money was collected from companies threatened or sued on this patent before the Alice decision and this decison, versus their litigation costs? [Which costs are normally very much lower for patent owners than defendants.]

Curmudgeon, are you saying that this could be considered “good” claim drafting if the owners managed to make some money from it?

In my view, there should never have been any doubt that the claim here was invalid under 112. Judge Chen isn’t breaking any new ground here – if neither the specification nor the common knowledge of the skilled person tells you how to determine whether the operation was done in “an unobtrusive manner,” then it’s impossible to ascertain the scope of the claim and it’s indefinite. It’s bad drafting, even if some poor victim was suckered into paying a licensing fee.